DETAILED ACTION
This is a first action reissue examination of U.S. Patent No. 11,491,752 B2 (hereafter “the ‘752 patent” and equivalent) addressing the filing 07 November 2024.
The following is the status of the claim under current review:
Claims 1-19 are cancelled.
New Claims 20-23 are pending and under examination.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Original Disclosure - Definition
The present application is a reissue of US Patent No. 11,491,752, which issued from App. No. 16/590,978 having a filing date of 02 October 2019. Any subject matter added during either the examination of the present reissue application or the earlier concluded examination of the ‘752 application does not constitute part of the “original disclosure”.
Maintenance Fees
Review of the record indicates no maintenance fee is due at this time. The 7.5-year fee has a window that opens 08 November 2029. The fee with surcharge has a date that begins 09 May 2030, and the last day to pay the fee with surcharge is 08 November 2030.
Information Disclosure Statement (IDS)
It is noted that an IDS has not been filed with the instant application that contains all the references listed in the issued patent. The absence of a list of these references could result in a reissue patent’s issuing without all the prior art documents listed on the original patent. Should applicant want any prior art documents listed in any resulting reissue, then applicant must submit an IDS listing the respective art unless the respective art is listed on an attached form PTO-892. See MPEP 1406.
Consent of Assignee
The Consent of Assignee is entered.
Drawings
The drawings submitted 07 November 2024, are objected to for the following: the “force sensor” as in the amended independent claims is not provided in at least what is shown in Fig. 2, in which the underlying patent was directed to a distance sensor (700).
Corrected drawing sheets in compliance with 37 CFR 1.173(b)(3) are required in reply to the Office action to avoid abandonment of the application. Amendments in reissue applications are different from standard utility application practice and are governed by 37 CFR 1.173. In particular, 37 CFR 1.173(b)(3) reads, with emphasis added:
Drawings. One or more patent drawings shall be amended in the following manner: Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings.
(i) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as "Annotated Marked-up Drawings" and must be presented in the amendment or remarks section that explains the change to the drawings.
(ii) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
The objection to the drawings will not be held in abeyance. See also MPEP 1453.
35 USC 251
35 USC 251 – Recapture:
The following is a quotation of 35 USC §251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
Claim Rejection – 35 USC 251 Recapture:
Independent Claims 20 and 22, and 21 and 23 by dependency, are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Step 1:
Reissue Independent Claims 20 and 22 are broader than claims Patented Independent Claims 1 and 11, but are otherwise substantially similar respective reproductions. Reissue Claims 20 and 22 do not require the distance sensor and its respective function. See Patented Claim 1, lines 9 and paragraphs beginning at lines 14 and 18, and see Claim 11, paragraphs beginning at lines 5 and 9.
Therefore step 1 of the three-step test is met for Reissue Claims 20 and 21.
Step 2:
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by applicant in the original prosecution to make the claims allowable over the art.
MPEP 1412.02(I)(B)(1)(A) states “[w]ith respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, ‘[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.’ Id.”
During the prosecution of the ‘752 patent (see serial number 16/590978), the Examiner rejected independent claims 1 and 11 citing art (see 17 March 2022 Action: beginning at pate 6). The Applicant responded with arguments and amendments, including adding in the distance sensor that is now being deleted (see response dated 26 April 2022).
Therefore, the Patent Owner amended claims 1 and 11 to add the limitations directed to a distance sensor and argued that the prior art did not include the limitations. Therefore, the newly presented claims must include the limitations of patented claims 1 and 11. Reissue Independent Claims 1 and 11 fail to disclose any of the language directed to the distance sensor which was added to the claims to make them allowable.
Therefore, the limitations of Claims 1 and 11, as directed to the distance sensor are limitations which are considered surrendered subject matter.
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.
Reissue Claims 20 and 22 are being broadened to omit the surrendered subject matter. Claims 20 and 22 eliminate the details of the surrendered subject matter, which was directed to the distance sensor.
Therefore step 2 of the three-part test is met.
Step 3:
MPEP 1412.02(I)(B)(1)(B) states “[w]ith respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:
[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361.”
The third step in the recapture analysis is, to determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. The third step include two different types of analysis that must be performed.
First, the reissue claim must be compared to any claims canceled or amended during prosecution of the original application. It is impermissible recapture for a reissue claim to be as broad as, or broader in scope than any claim that was canceled or amended in the original prosecution to define over the art. Claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165.
Reissue Independent Claims 20 and 22 delete the details of distance sensor.
Second, it must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. In any broadening reissue application, the examiner will determine, on a claim-by-claim basis, whether the broadening in the reissue application claim(s) relates to subject matter that was surrendered during the examination of the patent for which reissue is requested) by an amendment narrowing claim scope in order to overcome a rejection and/or argument relying on a claim limitation in order to overcome a rejection.
As noted above, the language directed to the distance sensor is being omitted from the respective independent claims. The language was added in during prosecution to overcome a rejection under art, which resulted in the subsequent notice of allowance. During the present reissue, applicant has entirely omitted surrendered generating limitations by omitting the distance sensor, but has narrowed in unrelated aspects by adding a force sensor. A force sensor is a completely different mechanism than a distance sensor and is unrelated as it measures a completely different feature than a distance sensor. See MPEP 1312.02(III).
Claims 20 and 22, and thereby dependent claims 21 and 23 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
Claim Rejections - 35 USC § 112
35 USC 112(b) - Indefiniteness:
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 20 and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20: “the compressive force” (claim 20: line 15) lacks antecedent basis.
Those claims listed under this heading but not directly addressed are rejected as being dependent from a rejected claim, either directly or indirectly.
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Below is a substantial reproduction of the respective claims addressing all limitations with the examiner’s comments in bold italics.
Claim(s) 20 and 22 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Lang (U.S. Publication 2017/0367268 A1).
Claim 20 (New): Lang discloses A strapping machine comprising:
a frame (Fig. 1: 38);
a top platen (Fig. 2a:86) supported by the frame;
a load supporter (bottom plate 86) below the top platen;
a top-platen actuator (see paragraph [0020] which notes the walls of the bale case are adjustable to vary the amount of resistive force) operably connected to the top platen to move the top platen toward and away from the load supporter (as generally disclosed);
a strapping head (paragraph [0018] notes the bales are bound by e.g., wire);
a force sensor (126); and
a controller (14) configured to:
control the top-platen actuator to move the top platen toward the load supporter and a load positioned on the load supporter;
as the top platen moves toward the load supporter and the load, monitor the compressive force the top platen applies to the load based on feedback from the force sensor (this would occur as provided in paragraph [0020] indicating the walls of the base case can be adjusted; paragraph [0026[ notes that sensors may be in plurality, which includes a force sensor); and
responsive to determining that the compressive force the top platen applies to the load has reached a target compressive force, control the strapping head to strap the load (see paragraphs [0020]-[0025], the determination of the compressive force results in the strapping head being controlled either directly or indirectly).
Should there be disagreement with respect to the location of the force sensor or top platen/lower support, it would have been obvious at the time of filing to a person having ordinary skill in the art to arrange the parts as necessary because rearrangement of parts is considered an obvious matter of design choice. (See In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)(the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice.) Regarding the orientation of the top and bottom members, Lang is clear that the wall can be adjusted, which one having ordinary skill would interpret to be all of the walls forming case 86. Further, to have force sensors on the adjustable member 86 would be obvious as they can be adjusted to increase or decrease pressure as disclosed, and to have a sensor measuring these forces would prevent unwanted damage to the system.
Claim 22: Lang discloses A method of operating a strapping machine, the method comprising:
moving a top platen (first wall 86) downward toward a load supporter (second wall 86) on which a load (32) is positioned;
as the top platen moves downward toward the load supporter and the load, monitor a compressive force the top platen applies to the load based on feedback from a force sensor(this would occur as provided in paragraph [0020] indicating the walls of the base case can be adjusted; paragraph [0026[ notes that sensors may be in plurality, which includes a force sensor); and
responsive to determining that the compressive force the top platen applies to the load has reached a target compressive force, strapping the load by a strapping head (see paragraphs [0020]-[0025], the determination of the compressive force results in the strapping head being controlled either directly or indirectly).
Should there be disagreement with respect to the location of the force sensor or top platen/lower support, it would have been obvious at the time of filing to a person having ordinary skill in the art to arrange the parts as necessary because rearrangement of parts is considered an obvious matter of design choice. (See In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)(the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice.) Regarding the orientation of the top and bottom members, Lang is clear that the wall can be adjusted, which one having ordinary skill would interpret to be all of the walls forming case 86. Further, to have force sensors on the adjustable member 86 would be obvious as they can be adjusted to increase or decrease pressure as disclosed, and to have a sensor measuring these forces would prevent unwanted damage to the system
Claim(s) 21 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lang in view of Demon (U.S. Publication 2015/0272006 A1).
Claims 21 and 23: The strapping machine and method, except wherein the force sensor comprises a load cell. Demon discloses a similar system that incorporates a load cell for measuring a force exerted by a plunger on crop material (paragraph [0044]). It would have been obvious at the time of filing to a person having ordinary skill in the art to use a load cell as a force sensor as an art recognized equivalent that would perform equally as well. A load cell is a type of force sensor and would perform as intended without departing from the scope of operability of the prior art.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,491,752 B2 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For similar systems, see the following:
Derstine et al. (U.S. Publication 2009/0235628 A1)
Gawley et al. (U.S. Patent 6,367,377 B1)
Del Jiacco (U.S. Patent 3,996,849)
Brown Jr. (U.S. Patent 6,397,738 B1)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at 571.272.6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
CONFEREES:
/SARAH B MCPARTLIN/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
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